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ProfileIn-House Patent Prosecution Attorney/Agent Job Duties: Patent prosecution, including the preparation, filing, and prosecution of new patent applications; Supporting legal team in the preparation of intellectual property related legal opinions on issues such as freedom to operate, ownership, infringement, and validity; Supporting patent related due diligence in commercial transactions such as acquisitions, divestitures, and licensing; Preparing and participating in patent review panels to ensure IP and business strategy alignment. Possesses / willing to develop working knowledge of IP docketing system to independently docket and manage critical actions and associated dates; Support certain administrative needs of the department including, for instance, processing legal invoices, matter management, and assisting with similiar needs the legal department may require.
Qualification and Experience
The candidate should have Bachelor’s degree in a Science or Engineering discipline. Should have 5+ years of experience, preferably with a law firm. Must be registered to practice before the U.S. Patent & Trademark Office. If currently a patent attorney, must be admitted to at least one state Bar and be in good standing. Proficiency in Microsoft Office (Word, Excel, PowerPoint, and Outlook) is essential. Experience in intellectual property litigation is a plus, including experience investigating infringement by third parties, assisting in the preparation of cease and desist letters, and interfacing with outside counsel. Must be registered before the US Patent and Trademark Office and have a minimum of 5 years of experience prosecuting patents and coordinating non-U.S. prosecution and patent portfolio administration. Must have experience in analyzing the patentability of inventions and validity of patents, including the preparation of patent applications, opinions, and the filing of U.S. patent applications. Must not be de-barred by FDA for work in any Medical Device or Pharmaceutical business. Must also be able to demonstrate the following characteristics: Be highly motivated, with the ability to pro-actively organize a heavy workload and demonstrate and excellent analytical abilities.
Req Id 13941
1777 East Henrietta Road
Rochester, NY 14623